WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Commerzbank AG v. Youmdex thierry
Case No. D2021-1833
1. The Parties
The Complainant is Commerzbank AG, Germany, represented by Boehmert & Boehmert, Germany.
The Respondent is Youmdex thierry, France.
2. The Domain Name and Registrar
The disputed domain name <comdirect-investment.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2021. On June 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 11, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 11, 2021.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2021.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on July 8, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant Commerzbank AG founded Comdirect as a subsidiary. It merged with the Complainant in November 2020. Comdirect is a brand of Commerzbank AG and provides more than 2.7 million customers with saving, investing and securities trading services online.
The Complainant owns many registered trademarks in relation to its Comdirect activities including European Union Trade Mark Registration No. 001171081 for word mark COMDIRECT, registered on August 28, 2000, for financial affairs in class 36; and International Trade Mark Registration No. 723228 for word mark COMDIRECT registered on October 25, 1999, for financial affairs in class 36 designating Norway, Turkey, USA, Bosnia and Herzegovina, Switzerland, Czech Republic, Croatia, Hungary, Liechtenstein, Monaco, Montenegro, North Macedonia, Poland, Serbia, Russian Federation, Slovenia and Ukraine.
The disputed domain name was registered on April 3, 2021.
The Respondent is a French national. The disputed domain name resolves to a shadow website offering financial services that are not in fact related to the Complainant and its trademarks (the “Respondent’s website”).
5. Parties’ Contentions
According to the Complainant, the disputed domain name identically adopts its COMDIRECT trademarks. The Complainant says that the addition of merely generic, descriptive, or geographical words to a trademark in a domain name is insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.
The Complainant points out that it has not licensed or otherwise authorized the Respondent to use its COMDIRECT trademark or to register a domain name incorporating that mark. According to the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name but clearly intends to obtain an unfair commercial gain, by misleadingly diverting consumers to its website. The latter does not meet any of the elements as set out by numerous UDRP panel decisions for a bona fide offering of goods, in accordance with Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The use of a domain name cannot in any case be “fair” if it suggests affiliation with the trademark owner, the Complainant contends. Impersonating the Complainant for evidently fraudulent purposes can under no circumstances establish a legitimate interest on behalf of the Respondent.
The website to which the disputed domain name resolves is in French. According to the Complainant, it clearly suggests that the services there offered are endorsed by the Complainant, which they are not. In the disputed domain name itself the Respondent adopts the Complainant’s COMDIRECT trademarks supplemented by the descriptive term “investment”, suggesting that the relevant site is an official or endorsed website for the Complainant’s financial services offered under the COMDIRECT brand. The relevant website also prominently displays the Complainant’s COMDIRECT trademark supplemented by the descriptive term “investment” at the top of the website, being a location where Internet users typically expect the name or brand of the website provider to appear. The “Legal Notice” section of the website falsely indicates the official address of the head office of the Complainant’s Comdirect branch, thereby clearly impersonating the Complainant and its Comdirect subsidiary and demonstrating the illegal and fraudulent character of the relevant website.
It is evident therefore, according to the Complainant, that the disputed domain names is being used for fraudulent purposes, to deceive Internet users into investing funds by impersonating the Complainant and its Comdirect branch. The disputed domain name resolves to a website that neither shows any specific details regarding the identity of its real provider nor does it clarify the real relationship to the Complainant. According to the Complainant, this leaves the relevant consumers with the false impression that it endorses the services offered on the Respondent’s website.
According to the Complainant, it is thus evident that the Respondent registered and used the disputed domain name in bad faith pursuant to paragraph 4(a) of the Policy, namely to impersonate the Complainant in order to use the Complainant’s reputation for the alleged offering of services via the relevant website for fraudulent purposes.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s registered trademark COMDIRECT. However, it incorporates that mark as its first and immediately recognizable component. The addition of the term “investment” does not prevent a finding of confusing similarity between the Complainant’s COMDIRECT trademark and the disputed domain name. The Complainant’s trademark is clearly recognizable in the disputed domain name, since the mark COMDIRECT is separated from the term “investment” by a dash (see section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Therefore, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s COMDIRECT trademark.
B. Rights or Legitimate Interests
The Respondent did not file a response to the Complaint, nor is he authorized or licensed to use the Complainant’s trademark in any way, including for incorporation in a domain name. The Panel finds that the Complainant has established a prima facie case. The burden of production is therefore on the Respondent (see section 2.1, WIPO Overview 3.0). The activities of the Respondent as identified in the Complaint, are not of a kind to vest any rights or legitimate interests in the Respondent. Rather they are seemingly directed at misleading Internet users by falsely suggesting some legitimate connection with the Complainant, which does not in fact exist.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The website to which the disputed domain name resolves has clearly been established so as to mimic a legitimate website of the Complainant. It adopts and displays the Complainant’s trademark and thus falsely suggests that it is actually established by the Complainant, for which purpose it includes a reference to the Complainant’s headquarters in Germany. The disputed domain name has clearly been chosen with the Complainant in mind, as it composition indicates that the Respondent was well aware of the Complainant’s financial investment activities. It is unimaginable that the Respondent chose the disputed domain name in ignorance of the Complainant’s rights and trademarks. Rather, it is apparent that the Respondent had in mind all along, a fraudulent scheme to enter into communication with Internet users misled as to the connection between the relevant website and the Complainant. The acquisition and the use of the disputed domain name are clearly part of that fraudulent scheme. It relies on impersonating the Complainant by adopting of its COMINVEST mark and branding. The Respondent also made use of a privacy shield.
Therefore, the Panel holds that the disputed domain name was registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <comdirect-investment.com> be transferred to the Complainant.
William A. Van Caenegem
Date: July 20, 2021